AMP v. Myriad (Fed. Cir. 2010)
In March, 2010, District Court Judge Robert Sweet held Myriad's gene patent claims invalid for failing to satisfy the subject matter eligibility requirements of 35 U.S.C. 101. The ruling was directed toward claims that cover particular isolated DNA molecules (genes) and processes of detecting and screening for those genes, but was written broadly enough to essentially invalidate all patents covering genes that were isolated from an organism.
Last month, I heard a rumor that Obama administration science and legal advisors outside of the USPTO supported Judge Sweet's ruling. At the time I disregarded that suggestion as unlikely. I was wrong. [Andy Pollack at the NYTimes has the scoop]
The US Department of Justice (DOJ) has now filed an amicus brief supporting the lower court decision — arguing that isolated genes are unpatentable because they improperly claim a product of naturer [Link to Brief]:
The district court correctly held . . . that genomic DNA that has merely been isolated from the human body, without further alteration or manipulation, is not patent-eligible. Unlike the genetically engineered microorganism in Chakrabarty, the unique chain of chemical base pairs that induces a human cell to express a BRCA protein is not a “human-made invention.” Nor is the fact that particular natural mutations in that unique chain increase a woman’s chance of contracting breast or ovarian cancer. Indeed, the relationship between a naturally occurring nucleotide sequence and the molecule it expresses in a human cell — that is, the relationship between genotype and phenotype — is simply a law of nature. The chemical structure of native human genes is a product of nature, and it is no less a product of nature when that structure is “isolated” from its natural environment than are cotton fibers that have been separated from cotton seeds or coal that has been extracted from the earth.
. . . .
Thus, the patent laws embrace gene replacement therapies, engineered biologic drugs, methods of modifying the properties of plants or generating biofuels, and similar advanced applications of biotechnology. Crossing the threshold of section 101, however, requires something more than identifying and isolating what has always existed in nature, no matter how difficult or useful that discovery may be.
. . . .
A product of nature is unpatentable because it is not the inventive work of humankind. That essential rule cannot be circumvented by drafting claims for the same natural product removed from its natural environment and proclaiming the result “pure.”
Several other amici have filed briefs:
- USA. Myriad.CAFC.Amicus.USA.pdf (191 KB)
- Intellectual Property Owners Association. Myriad.CAFC.Amicus.IPO.pdf (423 KB). The IPO brief was written by Paul Berghoff, Kevin Noonan, and their team at the MBHB law firm.
- Alnylam Phamaceuticals. Myriad.CAFC.Amicus.Alnylam.pdf (273 KB). The Alnylam brief was drafted by Hal Wegner and his Foley partners.
- AIPLA. Myriad.CAFC.Amicus.AIPLA.pdf (2136 KB). The AIPLA brief was filed by Erika Arner and her team at Finnegan.
asked and “answered” (by the courts, not me) – repeatedly Maxie.
repeatedly.
but but but….I thought one had to construe the US Constitution just like any other legal document. You’re the lawyer, ping. When the Founding Fathers wrote “useful arts” what were they using those words to mean?
But perhaps I have been comprehensively Scali_wagged and you haven’t yet. Do put me right again ping, if I have got it wrong once again. And have fun doing it, won’t you.
Maxie,
“On the utility of business methods, ping, like I said long ago in these pages, it is politically impossible for SCOTUS to announce to the American public that business methods (as such) are not “useful arts”.
It is more than politically impossible Maxie – open your eyes, break out your Websters and add a few words. Start with “legally”, then add “actually” and “categorically” before moving to phrases such as “as a practical matter”, and “as a matter of reality.” Have some fun!
Good point there IANAE, and food for thought.
The discovery of the segment and its use is the invention. Truly it is.
I am on the fence again. This is a close case.
On the utility of business methods, ping, like I said long ago in these pages, it is politically impossible for SCOTUS to announce to the American public that business methods (as such) are not “useful arts”. But I know that this position was part of their discussions during the Bilski case, because that is how some of the amici put it to them, and so I believe (foolishly or otherwise) that it remains part of the judicial mindset. The Technical Boards of Appeal of the EPO allow “business method claims” all the time despite their statute bar on business methods as such. I see global convergence, also on the patentability of DNA molecule claims. You?
Ping: you caught me. I am really Malcolm. I have been arguing with myself. It’s been quite a ride.
He’s as blind as he can be,
Just sees what he wants to see,
“Same question regarding”
Building blocks and abstractions – that all that be. Any art. Each art.
There’s a king on a throne with his eyes torn out
There’s a blind man looking for a shadow of doubt
There’s a rich man sleeping on a golden bed
There’s a skeleton choking on a crust of bread
Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.
Wild DNA doesn’t come neatly packaged in individual genes (as far as I know). Isolating a particular tiny section of the genome may or may not be inventive, but that would depend mainly on whether it was obvious to select out that section.
After all, whether or not a particular sequence exists in nature, it’s theoretically possible to write down every finite length sequence. Every possible sequence is known in principle, so how can you say that any particular sequence is non-obvious even if it’s created in the lab? They’re all species of the fully-knowable genus of DNA sequences, or if you prefer they’re all species of the fully-knowable genus of base-4 numbers.
Same question regarding finite strings of ones and zeros on a finite-capacity computer-readable medium, or finite arrangements of atoms to make pharmaceuticals, alloys, or polymers.
NWPA, that sounds awfully NALish. Wait, so NWPA is a sockpuppet of NAL. Wait, but NAL is a sockpuppet of IANAE. Wait, yikes, IANAE is a sockpuppet of Malcolm.
This means…NWPA is a sockpuppet of Malcolm.
This brings a whole new level of meaning to the term self-flaggelation.
Maxie,
the thread is always quick to vegetate when ya don’t pay attention to such important decisions like Bilski, and continue to spout such nonsense as “business methods don’t have utility.” Seriously, “utility” is an extremely low hurdle.
And Iza will stir the pot (or is it stir the kettle?) with this observation:
From the link to uspto.gov :
“There are two criteria for determining subject matter eligibility and
both must be satisfied. The claimed invention (1) must be directed to one of the four statutory
categories, and (2) must not be wholly directed to subject matter encompassing a judicially
recognized exception…
Non-limiting examples of claims that are not directed to one of the statutory categories:…
ii. A naturally occurring organism.”
It appears that it is not even a statutory exception that underpins the Gov’s argument, but rather the naturally occurring “thing” that is proscriptively not directed to a statutory category. Herein lies the thought that if it exists in nature, the “thing” simply does not belong to a statutory class under 101. Ya don’t even go to the exceptions. Pays attention to Homey’s observation here anonymous, ya don’t even havta listen to my main man IANAE.
Now mind you, the Gov brief can be correct on point (things in nature – and yes Virginia, this includes molecules found in nature – are not patentable) and wrong on application. As Dr. Noonan has painstakingly shown, the isolation process simply involves human manufacturing of an item found in nature. For a long list of such explanations, see link to patentdocs.org
Manufacture is nowhere limited to adding things together using the building blocks of the particular art. Manufacture can (and does) also include activity by man in reducing the building blocks found in nature, removing bits and pieces. Ya just gotta have the right mindset of building blocks and abstractions is all.
Just an observation – feel free to draw your own answers.
MM: I have no sock puppets. I posted under Kettle twice on this thread because I was called a kettle.
We all, though, can spot the Malcolmy in your sockpuppets.
I am in a dilemma here Is F&L really SNL?
Fingerprints Dennis remember? You see what I have experienced on this line is not like others. So you see Japanese Patent Office speaks loudly. So does that involve Google? You see I do a lot of copying elsewhere.
Anon, is not “disgraceful” a synonym for the word you selected (“infamous”) to characterize my contributions to these pages? It is in the dictionary I use.
So, are my postings disgraceful? Or do you want to choose a word other than “infamous” to describe them?
Meanwhile, this thread is slowly vegetating.
Mr. MaxDrei,
Re: “I’ll not pay any attention to your assertion (with no supporting “rationale”)that my contributions are disgraceful.”
You claim that my assertion has no supporting rationale when my assertion merely points out that your assertion was made, not only without rationale, but actually in opposition to the existing rationale that has just recently unfolded in the Bilski case, and is decidedly disingenuous. Yes, it is apparent that you will not pay any attention, because your not paying attention is precisely the point of my statement.
You baldly assert that business methods have no utility. I simply called you on this bald assertion. You yourself used the word “disgraceful.” If that is how you feel, so be it.
Mr. Mooney,
You remind me of the maxim concerning how to tell if a person is a liar. That person believes that everyone else is a liar. Your suspicion that I am merely a sockpuppet of NWPA’s belies your own propensity towards sockpuppetry. I am not NWPA. Perhaps you should constrain yourself to your dialogues, or as the case may be, to your monologues, as your contributions remain shallow and non-deservedly self congratulatory.
Mr. IANAE,
Your ability, nay penchant, for purposeful confusion serves no one. You seem to relish drawing rather meaningless distinctions while leaving the gist of points unanswered. “But only if someone already knew about it. Otherwise, you’re not taking from the public anything that it had in any meaningful sense.” Except this is decidely false. It doesn’t matter about the “meaningful sense” – if the item is a natural item, a patent is not deserved for that item. Quite naturally, methods of using that item are still patentable. A second example is “101 bars only abstract concepts, laws of nature, and natural phenomena. That’s much narrower than “anything that nature already provides”. Instead of playing word games, perhaps you should explain what you understand what “laws of nature” and “natural phenomena” mean in the context of the judicial exception, so that the rebuttals can be made to your satisfaction straight off.
Mr. Ping,
It appears that though crass, your grouping of these posters together is quite on target, as their positions and methods do reinforce each other quite consistently. Just lose the ghetto-speak as it makes you difficult to understand, and clarity should always be a lawyer’s aim.
Mr. Cooper,
I am quite confused by your statement of “Perhaps a better analogy for a gene is a single plant of desirable properties selected from a field full of plants nominally of the same species. Such an individual plant, when propagated vegetatively, can be patented–that is settled law.”
I am not sure you want to use that example as it is decidely similar to the bacterium case already in the briefs that was decided against your holding, while I am not sure just what propagating vegetatively actually means.
Penitence is a thing that enervates our spirit, major to a higher decrease compared to decrease alone and producing a bigger mistake compared to mistake itself. So by no implies regret.
Malcolm, no.
I limit the discussion to where the manufactured composition is made from a known composition using a conventional process.
You say this is true of most, if not all, new compositions. If so, then…
I take it your position is that such a manufactured composition is patentable to the first person to find a use for the manufactured composition.
Shorter Kettle: “I have no clue what DNA is so I’m just going to call people names and ramble on about an old Supreme Court case.”
So, it would seem from the comments above that IANAE and MM (the Malcolmy twins) still endorse Benson. Is that true?
Now you seem to have moved from the natural law alleged in all of mathematics (or mathematical algorithm as it is called in Benson) to abstract idea.
Shameful that you are still being intellectually dishonest despite the assault on your castlekeep.
You are the good German.
Can anyone really endorse or claim that there is any sense to abstract idea? Which is basically saying something is too broad. And the Malcolmy twins say that shift registers are not limiting?
You must be Richard Stern.
But, unless I missed something, the isolated gene becomes isolated using a known process that operates on the wild DNA. Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.
This is about the tenth time we’ve been down this exact road in this thread. If this is your argument, then all claims to pure compositions are obvious if it can be shown (even after filing) that the composition can be found (albeit only in an impure or conjugated form) “in nature”. Is that your position, Ned?
Malcolm, infringement is a non sequitur. The real question is this: is the isolated DNA “new.” Are the differences between the wild DNA, old as a matter of law, and the isolated DNA enough to justify a patent as a matter of law.
No doubt the isolated DNA is different from wild. But, unless I missed something, the isolated gene becomes isolated using a known process that operates on the wild DNA. Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.
If I am wrong in this at all, please explain.
For example, earlier in this thread I asked whether a claim to DNA isolated from a known DNA, where the isolation process was well known, was obvious. I think you agreed that it was.
Ned To any fair reader, there is no material difference between the isolated DNA and the wild DNA, and the claim to one is effectively a claim to the other.
I don’t know what a “fair reader” is, Ned, but I do know that anyone with a working knowledge of patent law understands that a claim to an isolated DNA of SEQ X is not infringed by an animal comprising that sequence (assuming an ordinary definition of “isolated”).
In short: you are wrong, Ned, and it was so easy to prove you were wrong that I question whether you are sincerely arguing these points of yours or just spewing horsecrxp for the sake of spewing horsexcrp.
The DOJ states “A product of nature is unpatentable because it is not the inventive work of humankind. That essential rule cannot be circumvented by drafting claims for the same natural product removed from its natural environment and proclaiming the result ‘pure.’”
Of course, a “gene” does not exist as a gene, without more, in the natural surrounding. A gene implies an isolated coding sequence, whereas in nature, the chromosome comprises a long unbroken string of DNA, where there is no indication that one stretch is different from any other. A ribosome can detect start and stop sites, but a ribosome is not part of a gene. mRNA, or cDNA may encode a gene product, but neither is a gene. Isolating a gene from a chromosome and determining its nucleotide sequence clearly involves human intervention
Furthermore, a chromosome is not like a vein of gold, wherein the gold from one section is identical to the gold from another section. Gold is gold, but one stretch of DNA in a chromosome is not identical to another stretch, as the base composition and sequence will be different.
Therefore, the DOJ’s position breaks down. An isolated gene sequence, which does not exist in isolation in nature but is part of that long string of bases making up a chromosome, is in fact an artifact of human intervention.
Perhaps a better analogy for a gene is a single plant of desirable properties selected from a field full of plants nominally of the same species.
Such an individual plant, when propagated vegetatively, can be patented–that is settled law.
Accordingly, it is illogical to deny patentability to an isolated gene under sec. 101. It might or might not be obvious under sec. 103, but it is patentable subject matter.
“All the base are still belong to Benson”
lulz.
“Wild DNA doesn’t run afoul of any of the 101 exceptions. ”
lulzxalot
“the recitation of a particular SEQ ID clearly limits the claim to a very specific practical application of those phenomena.”
How so?
“the subject matter exception preempted by the claim should be particularly identified.”
You mean kind of like the DC did? O, right, like that.
Benson is a good example as to why a claim remains a claim to unpatentable subject matter regardless of its inclusion of incidental subject matter such as “a general purpose computer” or “a shift register.” The claim in substance remains a claim to the unpatentable subject matter regardless of its incidental differences.
I wouldn’t say that the differences are “incidental”, but I would say that they are not particular or limiting. A shift register in a computer does not meaningfully limit the concept of base-conversion to a specific practical application. All the base are still belong to Benson, which preempts the entire abstract concept.
In the Myriad case, the isolated DNA has incidental differences with wild DNA.
Right, but the problem with patenting wild DNA is a 102/103 one and not a 101 one. Wild DNA doesn’t run afoul of any of the 101 exceptions. Even if you want to rely on complementary base pairing or transcription/translation as natural phenomena, the recitation of a particular SEQ ID clearly limits the claim to a very specific practical application of those phenomena.
If the differences are incidental, and the wild DNA is prior art, the claim should fall under 103 upon a proper showing of obviousness. If the claim is to fall under 101, the subject matter exception preempted by the claim should be particularly identified.
IANAE, Benson is a good example as to why a claim remains a claim to unpatentable subject matter regardless of its inclusion of incidental subject matter such as “a general purpose computer” or “a shift register.” The claim in substance remains a claim to the unpatentable subject matter regardless of its incidental differences.
In the Myriad case, the isolated DNA has incidental differences with wild DNA. But the differences are product of a known process. The question is therefore whether the differences are material. This is a “constitutional” mandate under Benson.
To any fair reader, there is no material difference between the isolated DNA and the wild DNA, and the claim to one is effectively a claim to the other.
Now the use of the DNA to diagnose a specific illness, to provide a vaccine, or for other patentable purposes, may be patentable. But I think the Federal Circuit has to follow the government brief in this case, because it is right.
“enough substance to be thrown against a wall”
Maxie – that aint necessarily a good thing, ya might wanna hold your “thanks.”
Thank you IANAE, and thanks Anonymous for acknowledging that my contributions have enough substance to be thrown against a wall. I’ll not pay any attention to your assertion (with no supporting “rationale”)that my contributions are disgraceful.
Do I need to give more “rationale”? Must I repeat it all over again? I thought we all knew it from the legal theory put up to SCOTUS by some of the Bilski amici. If for some people here I am indeed “infamous” then it is for endlessly repeating the same point, and nobody’s here because they are looking for boredom.
I like how anonymous spouts out crxp and when it’s explained why it’s crxp, he/she/it just moves on with some new crxp.
Reminds me of NWPA.
You give no rationale for excluding the usefulness of banking improvements.
I think it comes down to whether making money without more, shuffling around intangible property, or managing a risk in the abstract, is a credible utility. I would expect not, since that would make utility automatic for any claim. Might as well say that your perpetual motion machine has utility as landfill.
Let’s put it this way. If a method of making money is a credible utility, try to draft a claim that lacks utility, bearing in mind that the claim is infringed by selling. I bet you can’t.
MaxDrei,
You give no rationale for excluding the usefulness of banking improvements. I recognize your non-US view (and obviously, your non-grasp of the recent Bilski transactions), but would you have us believe that usefulness only comes in technical flavors? Keep in mind that the “technical arts” test has been outlawed far longer than the Bilski case.
Or is this one of your infamous “sling it on the wall and see what sticks” comments?
The whole point here is that 101 bars anything that nature already provides.
Except that it doesn’t. 102 bars what nature already provides, and 103 bars trivial modifications to what nature already provides. But only if someone already knew about it. Otherwise, you’re not taking from the public anything that it had in any meaningful sense.
101 bars only abstract concepts, laws of nature, and natural phenomena. That’s much narrower than “anything that nature already provides”.
So, despite the recitation of the word “new” in 35 USC 101, patent-eligibility under 101 should NOT be assessed on date X relative to the state of the art on date X? That makes sense: it is how the EPO manages patent-eligibility under Article 52 of the European Patent Convention
But 101 also recites “useful”. The patent clause in the Constitution constrains patent eligibility to the “useful arts” which surely excludes what bankers were up to in 1787 but would unquestionably cover natural philosophical isolations of portions of a DNA molecule. Is “useful” in 101 because of the patents clause and, if so, ought it then to frank the patentability of DNA portions while depriving of patent-eligibility any improvements in the processes of banking?
anonymous If the exact same item is found to occur in nature after the patent grant, the patent should absolutely be nullified.
Perhaps, according to some inherent ineligibility standard.
Of course, the claimed compositions we are talking about are never found in nature. If they were, this issue would have been settled quite some time ago. It’s not as if there is a dearth of Ph.D.s in the 1600 art unit.
“but if the sequence is later discovered in nature that could retroactively render the claim non-statutory under 101, which is nonsensical”
Why?
This makes perfect sense. If the exact same item is found to occur in nature after the patent grant, the patent should absolutely be nullified. It would make no sense to do anything else.
The whole point here is that 101 bars anything that nature already provides. The act of a patent cannot take from what is owned by all. 101 is a perfectly proper place for this.
IANAE: “But obviousness should still be determined according to the law of obviousness, and 101 is neither an acceptable shortcut nor a necessary one.”
It could convincingly be argued to be BOTH acceptable AND necessary, given the incoherent and unpredictable quality of the current so-called “law of obviousness”.
I agree with the general tenor of your statement though. I think that 112, 102, and 103 houses should be put into order, and 101 used only as an extremely coarse filter.
Ned: Circling back, if subject matter varies from that which is old only in obvious ways, why do we not just say that the subject matter is not patentable under §101?
Because 101 and 103 are different.
If you isolate a wild gene having SEQ ID NO 1 that is known for a particular function, and use it for that function, your isolated gene is obvious because the wild gene was known for that purpose and you isolated it in a known way that required no inventive contribution.
If you create an isolated gene in a lab having SEQ ID NO 1, that was never before seen by man, and through experimentation discover that it is useful for the very same function, your isolated gene is not obvious, for reasons that should themselves be obvious.
There are two problems with your proposal:
1. Your claim in either case would be “an isolated gene having SEQ ID NO 1”. That claim is either statutory or not, because it has the exact same construction and scope in each case. The only difference between the two is the state of the prior art, which is not relevant to a determination under 101.
2. The second gene may not be obvious, but if the sequence is later discovered in nature that could retroactively render the claim non-statutory under 101, which is nonsensical because the statutory nature of a claim should not change over time. Furthermore, it would be non-statutory for the reason that it is per se obvious, which makes even less sense because we already have a rule for invalidating claims that are obvious. Finally, it would be obvious based on prior art that didn’t exist at the time, which would make the least sense of all.
I don’t mind if isolating a known gene sequence is generally considered obvious. In fact, I get the impression from Malcolm that it pretty much already is. But obviousness should still be determined according to the law of obviousness, and 101 is neither an acceptable shortcut nor a necessary one.
Iza not forget about you policy wank Willton:
“Surely, Willton, you know of the difference in structure when switches (moer than one) are created (heck, even just used) in series or in parellel, right? Ya might havta take off your policy blinders to recognize the plain truth.
That is far different compared to what I am talking about. You are talking about how electrical components may be located and connected on a circuit board to create different circuits. That is not the same as saying that a series of switches in a particular ON/OFF configuration is a different machine than the same series of switches with a different ON/OFF configuration. Sure, the first configuration may perform a different function than the second configuration. But the physical structure of the switches themselves have not changed.
A computer is a wonderful machine in that it can perform a multitude of functions at any given time. But the computer itself does not undergo any structural changes when it does so.
Posted by: Willton | Nov 02, 2010 at 12:35 PM”
I cannot force you to see when you choose to clamp your eyes shut. Ya wanted an engineering explanation and I gave ya one – but you immediately deny the impact of the inner change in construction with elements in series or parallel. Of course we both know that computers are not built in single on/off switch modes, so your policies driven from your simple example are only good for the isolated solitary on/off switch. No doubt, you’d prefer the nonsense answers of Malcolm.
Good luck with that.
Nov. 1st 2010 12:47 Malcolm Mooney “Isolated” talk about being able to see into the future
when March 2 forces the big boss to leave.. Well Malcolm the good thing is during all this you were not a STUB BUBB
Careful nike and ugg, Malcolm has already corrected you a dozen times, and this counts as five showings.
When a cigarette falls in adore using a match,it is destined to acquire hurt.
When a cigarette falls in adore using a match,it is destined to acquire hurt.
No just one indebted for others,while different people these times don’t know find out how to cherish others.
I would like weeping using the smile as opposed to repenting using the cry,when my center is broken ,is it required to fix?
I would like weeping using the smile as opposed to repenting using the cry,when my center is broken ,is it required to fix?
Ok I just read the article and he actually has asperger’s, so I guess I shouldn’t make fun of him too much. I just thought he was really nervous and maybe like 12 years old.
“Ah, now I see the real reason for your change in career plans, 6. You’ve already achieved your own special form of immortality: link to blog.games.yahoo.com .
Congratulations!”
Lulz I saw the video of the encounter behind that happening. You should see the super nerd dude he’s hilarious irl.
If, perchance, I should ever get my own character added to WoW though, I could call my life more or less complete.
Although, to be honest, I could already. I’m already unimaginably famous compared to what I would have ever believed a mere 4 years back.
If we are able to only come upon each and every other as opposed to stay with each and every other,then I wish we experienced by no implies encountered.
Good one White.
“Note to ping-a-ling: this is called “answering a question.” Someday maybe you’ll overcome your handicap and give it a try.
Posted by: Malcolm Mooney | Nov 02, 2010 at 01:15 PM ”
Yeah sunshine, here are highlights of that self professed way to answer: “Perhaps…I haven’t done… Diehrbot…”
You call that an answer? Seriously? Noncommittals, haven’t-dones and ad hominym. Boy, your integrity really shines dully there.
Then ya continue with the sophmoric “Yes you were” and geometric counting of your bizare nonanswers somehow being the “proof” that ya corrected me – this third grade nonsense of I-know-you-are-but-what-am-I integrity – scratch that, if ya tried that discussion with a third grader, she would probably just be_at your sorry _ss and be done with ya.
Yeah Malcolm, there is indeed world’s of difference between us – I be forthright about not giving answers, and graciously providing my extremely valuable onservations, and you be O-I-give-answers that aren’t nothin but crrp.
Even your silliniess has depleted the chuckle-meter on this matter, and if ya actually had anything at all that proved me wrong, ya woulda used it already instead of jacking yourself.
On top of everything else, ya forgot that today was windmill day. Hey there’s still time for your pointless be otchin, if ya hurry.
Malcolm, I agree with you that your hypothetical sequence is patentable subject matter.
On the “per se obviousness point” I was suggesting that if a sequence is old, and that the claim is to a modification of the old sequence that is introduced by the very process of identification of the old sequence, then the claimed to the “isolated” sequence is per se obvious.
It appears to me that the “isolated” DNA in this case varies from the wild DNA only in obvious ways. While it is structurally different, the structural differences are result of the process of isolation, which is known.
Circling back, if subject matter varies from that which is old only in obvious ways, why do we not just say that the subject matter is not patentable under §101?
This discussion of structural obviousness avoids the issue of whether the discovery of the association of the particular DNA with a particular form of cancer is a discovery that should be patented in some way. Truly I think that to be patentable the claim must associate the isolated DNA with the discovery in some patentable manner.
link to csmonitor.com
NWAP you seem very upset about this lower court opinion
It’s true, IANAE. You’re just foaming at the mouth and spouting incoherent nonsense. It’s been shameful to watch. Meanwhile, Night Wiper has been relatively clear and forthright this entire discussion.
[cue twilight zone theme]
ping a ling: Man O integrity caught in O lie.
Yes you were, as four repeated mistakes after you were corrected each time is almost surely intentional.
Oops, make that five, ping a ling!
By the way, if you can articulate a question about claims to isolated DNA molecules without calling NWPA a dishonest, mentally deficient hack, I’m happy to answer it.
I will also say to you IANAE that you seem very upset about this lower court opinion. I don’t blame you. I have been very upset for some years now about how intellectually dishonest people have been trying to bend patent law for policy reasons.
Now we are in a position that we cannot rely on the law anymore. We don’t know if it will be hijacked by a policy person. It is quite upsetting.
This is why I find MM such a distasteful person.
You tell me to swallow the Blue pill. The Red pill claims fraudulent debt. The Blue pill won;t let go because 15 years later! So guess what I spit both out.
Tomorrow is another day! And after that is done, I will start searching to take down Jah Jah too.
Where did I state that as my opinion?
IANAE: Are you an attorney? Do you know how judical exceptions are applied? I don’t think you understand this.
He ll I might not even need to be a judge anymore, this system might get its sht together without me.
Ah, now I see the real reason for your change in career plans, 6. You’ve already achieved your own special form of immortality: link to blog.games.yahoo.com .
Congratulations!
Sunshine, I am not arguing whether it is or is not.
And actually, you were arguing that it was not. You’ve stated a number of times that isolated genes were non-statutory for capturing some law of nature you were unwilling or unable to identify.
My point was and is that MM’s hypo cannot be fully answered unless we know whether or not a court could possible apply an exception. I think that is very clear thinking.
It’s very unclear thinking, unless you have in mind an exception that could plausibly apply. Because really, you could say that about any claim with no thinking at all. “Oh, sure, that’s fine unless it’s not for some reason.”
>>and it’s up to you to show why it’s in one of >>the three classes of exceptions.
Sunshine, I am not arguing whether it is or is not. I did not say I agreed with the lower court. You have some hostility problems.
My point was and is that MM’s hypo cannot be fully answered unless we know whether or not a court could possible apply an exception. I think that is very clear thinking.
You must not understand how judicially created exceptions are applied or you are just trying to pick a fight.
Sounds to me like you don’t understand how judicial exceptions are applied.
I understand that they’re exceptions. Molecules are well known to be generally statutory, as they are clearly within the 101 categories, and nobody ever complains about things like Teflon or acetaminophen being statutory. If there’s an exception for molecules that exist in nature, or for molecules that have a particular type of utility, that would be an exception, and it’s up to you to show why it’s in one of the three classes of exceptions.
“I never said I corrected you a dozen times.”
“If you can articulate a question that doesn’t incorporate a mistake that I’ve already corrected you on a dozen times, ping-a-ling I’m more than happy to answer. Got that? More than happy to answer.
Posted by: Malcolm Mooney | Nov 01, 2010 at 05:32 PM
Man O integrity caught in O lie.
“have corrected you on this point, however, 4 times”
??? – Wow that’s is some sheer lunacy there Malcolm.
“Wassa matta crybaby Malcolm? All of a sudden ya can’t find any of these dozen times that ya corrected me? Too ashamed to admit that ya were just flappin your gums?
“Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).”
Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.
C’mon Sunshine, stick to the bargain. SHOW ME, or SFU.
Ned, you lost me on your 4:18 and 4:23 posts. Not sure what you’re referring to and/or asking about.
Why not declare it unpatentable as a matter of law?
Because, as we presumably keep telling examiners, if they say our claim is obvious they have to prove it.
Besides, if isolated genes are per se obvious, on what basis can a non-genetic selection patent ever be non-obvious when it is selected from a known genus? On what basis can computer-readable data be non-obvious when it is selected from the known genus of all possible binary strings that fit on a computer-readable medium?
And most importantly, there’s a big difference between per se obviousness and non-statutory subject matter.
We don’t know what the sequence is, do we?
No, we don’t. Were you going to say that the sequence is statutory as long as it’s novel? That will take some explaining, and in particular more explaining than the trial judge gave.
I have a molecule here. You don’t know what the molecule is, but it has a substantial utility. I claim the molecule itself, specifying its exact chemical structure, including stereochemistry and everything. Is that claim statutory?
But, MM, the insolated gene is per se obvious.
Why not declare it unpatentable as a matter of law?
MM, patentable.
ping All of a sudden ya can’t find any of these dozen times that ya corrected me?
I never said I corrected you a dozen times.
I have corrected you on this point, however, 4 times in this thread alone. So you’re on your way, fruitloop.
6 All u lawlyers still going on and on about this subject. It’s GG already tards. Myriad is going down whether or not the patent protectionists at the Fed Circ. kill it or not. The USSC will do it while the gov. says so and you fers know it. 100% chance.
Well, we have 6’s prediction. He may be dead wrong but at least he’s no coward.
He ll I might not even need to be a judge anymore, this system might get its sht together without me.
That would be good – then you wouldn’t have to do those LSAT logic puzzles…
All u lawlyers still going on and on about this subject. It’s GG already tards. Myriad is going down whether or not the patent protectionists at the Fed Circ. kill it or not. The USSC will do it while the gov. says so and you fers know it. 100% chance.
Sorry, you lost, you can stop talking about it now. Just say GG and get on with your life ffs.
O and btw Good Mother Fin Game B itches.
And the same thing will happen when Bearegard claims finally get their day in court. Someone will bring suit, and then the government will be like “hur, we changed our position in light of this case being filed” and that’s it, gg fools. Just like I predicted for the last couple of years.
Good. Game. Again.
He ll I might not even need to be a judge anymore, this system might get its sht together without me.
Wassa matta crybaby Malcolm? All of a sudden ya can’t find any of these dozen times that ya corrected me? Too ashamed to admit that ya were just flappin your gums?
“Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).”
Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.
C’mon Sunshine, stick to the bargain. SHOW ME, or SFU.
>>I don’t care if you agree with it. I care that >>you don’t know how to apply it.
Nice try, but I am unwilling to make the arguments of the court. They are there for all to read in the lower court opinion. And not too terribly difficult to understand.
The unclaimed utility–because a sequence was specified as only being different. We don’t know what the sequence is, do we? If we don’t know what the seuqnce is then we can’t rule out an argument about a judicial excpetion just as we can’t rule out a judicial excpection if I just say some shift registers. Sheesh, you are slow.
OK. Bye. I have to get some work done. Go read the lower court opinion and argument with it.
I never said I agree with the natural law logic.
I don’t care if you agree with it. I care that you don’t know how to apply it.
I will say that the argument here is stronger than in Benson.
If it’s such a strong argument, why do you keep dancing around the main point, which is that you can’t monopolize a natural law unless there is a natural law being monopolized?
Benson is probably better understood as monopolizing an abstract concept, the concept being the conversion of numbers from one specified base to another.
Your move, then. What natural law is monopolized by a particular gene, and why should the patent eligibility of any molecule depend on its unclaimed utility? (You see, by avoiding the question you’ve now raised another question you can avoid.)
IANAE: I never said I agree with the natural law logic. I said that is what the SCOTUS did in Benson and what the lower court did here.
I ain’t you natural law whipping boy. I think the argument in Benson is outrageous. However, I will say that the argument here is stronger than in Benson.
by mapping it to an attempt to monopolize a natural law.
What natural law would that be, Captain Intellectual Honesty?
I don’t think it is ineligible. I think it is elgible.
The where it comes from and the utility of it do make a difference as that is how the court has excluded eligibility by mapping it to an attempt to monopolize a natural law.
IANAE: what? did you read the lower court opinion? I did.
It also doesn’t make any difference what the doofus judge said, NWPA. You’re trying to change the subject.
Why is my composition claim invalid as ineligible under 101? Why?
NWPA, as IANAE pointed out it doesn’t really matter what the utility is for purposes of this discussion. Assume it’s a substantial utility for 101 purposes. If that doesn’t work, assume that the sequence, when used to transform a microbe, quintuples the rate at which the microbe produces a life-saving anti-cholera drug.
IANAE: what? did you read the lower court opinion? I did.
MM: your hypo is interesting of course as it cuts out the mapping to a natural law.
Either you don’t understand that natural laws don’t need our permission, or you’re doing that intellectual dishonesty thing where you are completely incapable of or unwilling to say exactly what “natural law” applies here.
Also, what is the utility?
Who cares? The question was about statutory subject matter. Assume there is a utility. The utility does not need to be claimed, unless your invention is “a computer-readable medium having a specified utility when inserted into a computer”.